Katy is a hugely successful American pop star. Her fame carried her to extraterrestrial heights and even extended briefly into outer space for an unforgettable 10 minutes and 21 seconds. Beyond her music career, she has established a suite of companies to safeguard her various commercial ventures. Killer Queen, LLC serves as the vehicle through which she protects and manages her intellectual property rights.
Against this global celebrity backdrop sits a very different creative figure, Katie. Katie is a fashion designer who was born in London. However, like each of her basics and loungewear pieces, Sydney made her. She champions Australian craftsmanship. She also consciously rejects fast-fashion norms by avoiding offshore manufacturing and mass production. Her journey to Sydney included stints across Asia, Europe and South Africa.
Timeline of events
Aside from their surnames, Katy and Katie have very little in common. However, both women chose to incorporate “Perry” into the trade marks for their respective businesses. As a result, their seemingly parallel paths began to collide. What followed was a years-long trademark dispute that spanned nearly 17 years. It pitted a global pop icon, the self-styled Killer Queen, against a designer chasing the Australian dream.
Leading up to the KATIE PERRY priority date
In 2002, the singer Katheryn Elizabeth Hudson, whose mother’s maiden name is Perry, adopted the stage name “Katy Perry”. She then began building her career and making a name for herself in the United States. By 2008, the release of her breakout album One of the Boys had propelled her onto the international stage. Global charts embraced her distinctive signature camp writing style.
In June 2008, Katy sought to capitalise on this success. She applied in the United States to register the trade mark KATY PERRY in class 9 for CDs, class 25 for apparel, and class 41 for entertainment. During the same month, she embarked on her first international tour, which began in the United States.
As part of this tour, Katy was scheduled to arrive in Australia in October 2008. Australians could purchase tickets from mid-September 2008. However, at that stage, the only available “Katy Perry” branded merchandise had been sold during the United States leg of her tour.
Meanwhile, on 29 September 2008, the designer Katie Jane Taylor, who was born Katie Jane Perry, applied to register the trade mark KATIE PERRY in Australia in class 25 for clothing. This became the “priority date” for her application. It also marked the beginning of a years-long trademark dispute that neither party could have anticipated.
Between the KATIE PERRY priority date and registration date
The singer launched an online store for her merchandise in October 2008. Soon afterwards, her name began appearing in retail stores across Australia following her tour.
As her profile in Australia continued to grow, the singer began monitoring the Australian trade marks register closely. In May 2009, she first noticed the KATIE PERRY application. This discovery prompted the first clash between the parties. The singer opposed the designer’s application and demanded that she withdraw it.
On 26 June 2009, while negotiations with Katie continued, the singer filed applications in Australia for the KATY PERRY trade mark. These applications covered the same classes that she had applied for in the United States. However, the following month, she withdrew her opposition for reputational reasons. Consequently, the designer’s mark proceeded to registration.
From the KATIE PERRY registration date to the start of the litigation saga
This period brought both success and setbacks for the singer. In August 2009, negotiations with Katie collapsed after the designer rejected a co-existence agreement in the clothing space. One month later, authorities provisionally refused the singer’s class 25 application because of the designer’s existing registration. Katy ultimately withdrew her application from this class. However, she secured Australian registrations for KATY PERRY in classes 9 and 41.
Despite the designer’s registration, the singer sold KATY PERRY-branded clothing in Australia between 2009 and 2019. During this period, Katy completed two world tours. She also became a household name in the music industry.
The court of first instance and the full court appeal
Meanwhile, Katie had long felt aggrieved by the singer’s disregard for her rights. However, she only instituted trade mark infringement proceedings against the singer in 2019 after securing litigation funding. In response, the singer sought to cancel the designer’s registration. By this stage, a years-long trademark dispute had evolved into full-scale litigation.
First instance – Taylor vs Killer Queen, LLC (No 5) [2023] FCA 364 (21 April 2023)
At first instance, the Federal Court held that the singer had infringed Katie’s registration by advertising and selling clothing in Australia.
Although the court accepted that Katy had established a reputation in Australia by the KATIE PERRY priority date, it found that her reputation extended only to music and entertainment. It did not extend to clothing. Consequently, the court refused the singer’s counterclaim for cancellation. The dark horse landed the first blow.
Appeal – Killer Queen, LLC vs Taylor [2024] FCAFC 149 (22 November 2024)
On appeal, the full court unanimously overturned the first-instance decision. The court found in favour of the singer and ordered the cancellation of the designer’s registration. It held that the singer had established a significant reputation in the name KATY PERRY by the KATIE PERRY priority date. Therefore, consumers were likely to be confused or deceived by the designer’s use of the mark on clothing.
The court also held that the “own name” defence under section 122(1)(a) of the Australian Trade Marks Act 1995 (Cth) was available to the singer. This remained true even though “Katy Perry” was neither her birth name nor her legal name. The California girl pulled one back.
The High Court ruling – Taylor vs Killer Queen LLC [2026] HCA 5 (11 March 2026)
The designer obtained leave to appeal to Australia’s apex court. The majority allowed her appeal. The court set aside the Full Court’s orders and reinstated her trade mark registration. In doing so, the court confirmed that a trade mark can acquire a reputation only in relation to the specific goods or services for which it is used. It does not automatically extend to other classes.
While it may be “common practice” for pop stars to expand into clothing, stage names used as trade marks do not automatically acquire a reputation for those goods. Therefore, although KATY PERRY had established a reputation in the music space by September 2008, that reputation was not sufficient to displace KATIE PERRY in the clothing space. This position remained unchanged by December 2019.
The singer could not produce evidence showing that the designer’s use of her registration caused consumer confusion. Katie could finally light her fireworks and bring a years-long trademark dispute to a successful conclusion.
What if Katie had never left South Africa?
Opposition and cancellation proceedings
Without a registration for, or established goodwill in, the KATY PERRY mark in South Africa, the singer would have needed to rely on section 10(6) of the South African Trade Marks Act 194 of 1993. She would have used this provision to oppose or cancel the designer’s application.
This provision prohibits the registration of marks that reproduce, imitate or translate international trade marks that are well known but unregistered in South Africa. Crucially, however, the applicant must use the mark in relation to the same or similar goods or services for which the international mark is well known. In addition, its use must be likely to cause deception or confusion.
In this case, the designer transformed her birth name into her trade mark. Therefore, she could credibly argue that the section did not apply because she had not copied the singer’s mark. Moreover, although many regard it as “common practice” for pop stars to expand from music and concerts into clothing, that practice alone does not necessarily make those goods and services similar. Nor would it necessarily follow that consumers would be deceived or confused.
Defending trade mark infringement proceedings
The South African Trade Marks Act also contains an “own name” defence under section 34(2)(a). Among other things, it allows a person to use their own name as a trade mark, provided they do so in good faith. Our courts have held that this defence applies only to the use of a person’s full name.
Furthermore, the use must not be likely to confuse or deceive consumers. “Katy Perry” is not the singer’s full name. In addition, she knew about the designer’s registration and the confusing similarity between the KATY PERRY and KATIE PERRY marks. Consequently, this defence would probably not have saved her. Therefore, South Africa would likely have produced the same outcome.
The lesson
Katie’s victory reminds brand owners that they cannot assume fame in one field will seamlessly translate into protectable rights in another. Reputation, like a hit song, may travel far and wide. However, its legal reach remains tethered to the goods and services that gave it life.
For global stars and growing businesses alike, trade mark strategy should never be played by ear. Brand owners should expand early, file broadly and secure protection across all commercially relevant classes before others take the stage. In trade mark law, the biggest risk is looking back and realising that your mark was the one that got away.
 |
 |
| Peter Mercuur | Associate | mail me | | with oversight by Salomé Le Roux | Partner | mail me | |
| | Spoor & Fisher | | |
